Trademark in bad faith

Trademark in bad faith in Italian case-law

Article 19, paragraph 2) of the Italian Industrial Property Code provides that:

“Cannot get a registration for a trademark who filed the application in bad faith”.

Specifically, in which cases is it possible to identify a case of trademark in bad faith?

The Court of Appeal of Milan (judgment of 9 December 2013, registered under n. 263/2011) states in this regard that:

“it is undisputed that the trademark filing in bad faith is made only by the person who knows that he can violate a right of someone else, while it is different the situation of who is aware of the existence of a former trademark, but he does not think to violate the right for a justified reason”

The awareness of being able to violate the rights owned by someone else is, therefore, presupposition and integral part of the matter of bad faith; the concept is reiterated several times by the jurisprudence. See, for example, the Court of Rome (judgment of 17 February 2016, registered in 64105 RGAC of the year 2013), according to which:

“The bad faith of article 19 of the Industrial Property Code is notoriously referring to the registration in prevarication, made by subjects aware of the contents and object of the trademark or in a manner that is manifestly fraudulent”.

Trademark in bad faith in EU case-law

With regard to the European Union trademark, bad faith is an absolute ground for invalidity.
Article 59, 1) letter b of the European Union trademark regulation n. 2017/1001 provides that:

“An EU trademark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for the trademark”

The same provision was provided for in article 51, 1 letter b) of the previous Community regulation n. 40/94, which was interpreted by the Court of Justice in the judgment of 11 June 2009 (case C-529/07), in which it was clarified that for the purposes of assessing the existence of the bad faith of the applicant of the European Union trademark, it is necessary to take into consideration all the relevant factors existing at the time of filing the trademark application, particularly:

•  The fact that the applicant knows or should know that a third party uses, at least in one Member State, an identical or similar sign for an identical or similar products and likely to be confused with the sign for which registration is sought.
• The presumption that the applicant is aware of the use by a third party of an identical or similar sign…may result, in particular, from a general knowledge of such use of such use in economic sector concerned, where such knowledge can be inferred, in particular, from the duration of such use. In fact, the more this use is old, the more likely it is that the applicant was aware of it at the time of the trademark application filing. However such presumption is not sufficient, in itself, to establish the existence of bad faith.
• The applicant’s intention to prevent third parties from continuing to use such a sign.
• The intention to prevent a third party from marketing a product may, under some circumstances, characterize the applicant’s bad faith, particularly if he does not intend to use such sign, but he only wishes to prevent a third party from entering the market.
• The degree of legal protection enjoyed by the sign of third party and the sign for which registration is sought.